Following a recent decision of the Appointed Person in Marco Polo (O/681/22), we are recommending that holders of International Trade Marks designating the United Kingdom should appoint a UK-based address for service.
UK address for service requirements — a brief background
The holders of International Trade Marks designating the United Kingdom are only required to appoint a UK-based address for service where the designation faces an objection from the UKIPO or an opposition from a third party.
Where a designation proceeds to registration without any objections, it will sit on the register without a UK-based address for service.
The Marco Polo case
In the Marco Polo case, New Holland Ventures Pty Ltd (“New Holland”) obtained an International Registration in June 2020 which designated the UK. The UKIPO notified the International Bureau in January 2021 that it was protected. The notice of protection was sent by the International Bureau to the WIPO address for service for New Holland Ventures Pty Ltd.
In May 2021, Tradeix Ltd filed an application for a declaration of invalidity against the UK designation. As prescribed by the Trade Mark Rules 2008, notice of the invalidity action was sent to New Holland by mail. The notice was not sent to the International Bureau or the WIPO address for service.
The notice set a two-month deadline for appointing a UK-based address for service and a defence. New Holland did not receive the notice, as its offices were closed due to the COVID-19 pandemic and associated lockdowns in Australia. Following the failure to file a defence, the UKIPO sent a second notice to New Holland by mail, which again was not received.
In March 2022, the UKIPO issued a decision declaring the UK designation invalid — a copy of which was forwarded to the International Bureau, who notified the WIPO address for service. New Holland appointed a UK-based address for service and appealed the decision on the basis that it did not have the opportunity to file a defence.
The Marco Polo decision
The Appointed Person — Geoffrey Hobbs KC — held that the application for a declaration of invalidity had not been properly served on New Holland. Hobbs KC stated that the UKIPO was only empowered to write to the Australian address to set a one-month deadline for appointing a UK-based address for service — not to serve the application for a declaration of invalidity.
The Appointed Person further held that the rules do not grant the UKIPO a discretion to serve documents outside the jurisdiction — such that the notification of the application for a declaration of invalidity to the proprietor in Australia did not trigger the statutory two-month period for filing a defence. The decision was then set aside, and the matter has since been returned to the UKIPO for prosecution.
Key learnings for trade mark holders
It has always been advisable for holders of International Trade Marks designating the UK to ensure that their address on the register is correct and monitored to ensure that any correspondence sent by the UKIPO is received. The UKIPO is not required to send notifications by mail for all correspondence that it issues to the International Bureau. In light of the decision in Marco Polo, we are recommending that the holders of International Trade Marks designating the United Kingdom appoint a UK-based address for service on filing.
No guidance has yet been issued by the UKIPO as to how it may change its practice following the Marco Polo decision. For new designations, it is possible that the UKIPO may request a UK-based address for service as part of the examination process. Granted designations pose more of a challenge, as the UKIPO would need to notify all holders of UK designations — which would need to be done by mail — and set a deadline for a response. In the meantime, proactively appointing a UK-based address for service will avoid any mail going astray.
If you would like to discuss how we can support you and your clients in the UK, please talk to your usual Murgitroyd advisor or send us a note at [email protected].
